Upcoming Events

I’m looking forward to a few upcoming events for patent law professionals:

September 7-9, 2014, the Intellectual Property Owners Association (IPO) will hold its annual meeting in beautiful Vancouver BC. I’ll be there joining a panel discussing the impact of recent US Supreme Court patent cases. [LINK]. The IPO event again has a great line-up, including Professor Hricik, Nathan Myhrvold, and many more.

On the evening of November 5, 2014, I will be delivering the University of Houston’s IP IL Annual Fall Lecture at the Four Seasons Hotel in Houston (Sponsored by the Katz Foundation). My talk will be on incentives (current and future) for patent clarity. [LINK]. Thank you to the University of Houston Law Center for hosting this event.

November 6-7, 2014, I will be down in Austin Texas participating in the annual Advanced Patent Law Institute with a talk titled Evidence Based Patent Law: Trends and Statistics, and What they Mean for Your Practice and your Patent Portfolio. [LINK]. Other speakers include Professors Golden (UT Austin), Lemley (Stanford), Wegner (formerly with GWU), and Hricik (Mercer); the Hon. Terry Rea and Randy Rader; Rob Sterne, et al.

January 7-11, 2015, I will be in Vail, Colorado talking about patent law as part of the 32nd National CLE Confrence where they also happen to have “amazing skiing.” Conference co-chairs are Scott Alter (Baker Daniels) and David Bernstein (Debevoise & Plimpton ). [LINK]

Regarding: “My talk will be on incentives (current and future) for patent clarity. [LINK]. Thank you to the University of Houston Law Center for hosting this event.”

I would suggest the following.

Many of the alleged evils and problems of the Patent System, including the “problems” of functional claiming, stem from the following “definition” of “inventor.”

II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION

The definition for inventorship can be simply stated: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)].

One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). See also Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 1340, 67 USPQ2d 1252, 1259 (Fed. Cir. 2003) (“Invention requires conception.” With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed. “[G]eneral knowledge regarding the anticipated biological properties of groups of complex chemical compounds is insufficient to confer inventorship status with respect to specifically claimed compounds.”); Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982) (“one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not an coinventor”). See MPEP § 2138.04 – § 2138.05 for a discussion of what evidence is required to establish conception or reduction to practice.

If the inventor is the one that conceives of the invention, to the exclusion of the minions that “merely” “reduce the invention to practice”, it follows, does it not, that the invention is at the level of the concept (the function, if you will) and not at the detailed level of the various reductions to practice?

Functional claiming is a way of describing a device by describing what it does, rather than by a list of hardware components. Instead of saying the device includes a fastener, the claim might indicate that the device includes a component for fastening.

There are those that assert that this sort of claim is overly broad, an outrage and a crime against humanity.

I assure you that I am not among those. The intention behind my over abundant use of quotation marks was to communicated the sarcastic intent behind any remarks that might be literally interpreted the other way.

Yes my point was that Lemley says functional claiming is ev1l. But, when you think about what it does to the patent system you realize it encourages inventors to load applications with as many embodiments as possible (that which is known.)

Is this the paper: “Software Patents and the Return of Functional Claiming? I did not pay the $30 to read it because the title and intro indicate a limitation to software. Are you saying it is more general?

I think Lemley’s paper on functional claiming is very wrong.
Come on … Lemley got his degree in political science. He is both qualified to speak, as a scientist, as to what description within a specification enables one skilled in the art to practice the invention without undue experimentation — particularly in the field of computers. Moreover, his extensive experience in patent prosecution (doesn’t political science qualify one to sit for the patent bar?) informs his opinion as to the ease/difficulty in drafting patent specifications/claims so as to cover all embodiments encompassed by Applicant’s invention.